esports-law-gaming

Some Intellectual Property Law Considerations for Video Game Developers and Publishers

By Justin M. Jacobson, Esq.

Proper protection of intellectual property by game publishers and game developers is of utmost importance. Usage of these protocols are especially critical as international major and independent or “indie” developers and publishers continue to grow their businesses via traditional business models (i.e., digital and physical copy sales), through the “Free-to-play” (F2P) and freemium models, as well as with the emergence of “Play-to-earn” (P2E) game titles and the creation and expansion of digital “metaverses” and associated non-fungible tokens (NFTs). As a result, a video game creator should be aware of and properly protect all of their intellectual property assets, including any relevant trademarks and copyrights.

Trademark Law Protections for Game Developers and Publishers

A major intellectual property protection that exists is trademark law. A trademark registration protects a word, logo,  slogan, color, sound, catchphrase, product design, a hashtag, or any combination of these used to differentiate the goods or services that one company provides from those of another. As a result, most major AAA publishers as well as many indie game developers utilize trademark law to protect their intellectual property. In fact, trademark protection can be acquired by a company on a state, federal and/or on an international level. Consequently, it is paramount that a video game or software developer ensures that they are protected in the various jurisdictions that they market, license, distribute and sell their games.

While there are many benefits in obtaining a trademark registration, one of these is that it prevents another party from using the same or a confusing similar mark for the identical or similar goods or services. Similarly, a trademark registration in a name is also a valuable commodity that can be licensed or sold to a third party. The existence of a registered mark also provides the owner with the ability to stop counterfeit or “grey market” goods with the owner’s mark from entering the United States by coordinating with the U.S. Customs and Border department. Finally, another useful benefit of a trademark registration is that it can be used offensively to file infringement claims with various social media platforms to retrieve or to block potentially infringing accounts, including with Facebook, Twitter, and Instagram as well as it may be used during a website domain dispute through ICANN.

While a game development or publishing company has many different trademarks to choose from, some common ones include filing for trademark protection in their game publisher or developer company name as well as in their company logo. For instance, companies such as “Riot Games” (U.S. Reg. No.  4,109,440), “Activision” (U.S. Reg. No. 1,207,377), “Nintendo” (U.S. Reg. No. 1,689,015), “Epic Games” (U.S. Reg. No. 5,712,420), and “Supercell” (U.S. Reg. No. 4,929,916), among many others, have all obtained registered trademarks in their company names as well as, in some cases, their logo. In fact, some of these companies have obtained protection in the United States as well as in other countries. A game creator could also register an individual game title or a gaming console name with their associated game or console logos. In fact, some console names are currently protected by their owners such as “Nintendo 64” (U.S. Reg. No. 2,372,472), “Playstation” (U.S. Reg. No. 2,259,732), “Xbox” (U.S. Reg. No. 2,698,179) and its successor console, “Xbox One” (U.S. Reg. No. 4,557,248). Additionally, some of these companies have also received protection for their gaming console names in the United States as well as internationally. There are also many videogame titles and associated logos that have been protected via trademark law, such as “Valorant” (U.S. Reg. No. 6,286,126), “League of Legends” (U.S. Reg. No. 3,756,125), “The Legend of Zelda Breath Of The Wild” (U.S. Reg. No. 5,277,680), “Clash of Clans” (U.S. Reg. No. 4,643,127), and “Starcraft” (U.S. Reg. No. 2,881,608). Furthermore, subsequent game titles in a specific series may also be eligible for trademark protection. For example, a game publisher has obtained protection in the original game title, “Pokémon” (U.S. Reg. No. 2,514,998) as well as for other sequel titles in the series such as “Pokémon Moon” (U.S. Reg. No. 5,214,916), “Pokémon Sun” (U.S. Reg. No. 5,214,914) and “Pokémon Go” (U.S. Reg. No. 5,646,122) in a variety of different classes and for many unique products. Similarly, the developer for first-person shooter (FPS) title, “Call of Duty” (U.S. Reg. No. 4,035,859) has obtained protection in its original title and in subsequent game names including for “Call of Duty Ghosts” (U.S. Reg. No. 4,766,061) and for “Call of Duty Black Ops” (U.S. Reg. No. 4,029,838).

Finally, in addition to a software development company’s protection of their company name and logo, a game title or video game console, equipment or peripheral name and logo; these companies may also obtain protection in any “in-game” character names. In fact, many iconic game character names are protected under trademark law, including “Super Mario” (U.S. Reg. No. 6,082,304) “Pikachu” (U.S. Reg. No. 2,646,008) and “Sonic The Hedgehog” (U.S. Reg. No. 3,009,472). These entities might also protect any public marketing slogans and any identifiable “catchphrases” associated with their game, with their company, or with a specific in-game character. These companies could also obtain trademark protection for any hashtags used by them in any public marketing and publicity campaigns related to the promotion of a game or of the developer. While these are just a few common trademarkable assets owned by a game developer or publisher, it is important that a company is aware of what might be protected and how to best safeguard their tradenames in the global video game market. These considerations are particularly important if these entities began creating their own digital metaverses or “virtual worlds” as well as if they are incorporating and offering their own protected and transferable in-game items and assets, such as in the form of NFTs.

Copyright Law Protections for Game Developers and Publishers

In addition to proper trademark protection for a game developer or publisher, there are existing copyright law protections that these companies might also incorporate to best protect themselves. Similar to the music industry, copyrights for a video game and computer software are a complex matter. This is because there are two separate copyrights in a video or computer game. Specifically, there is a copyrightable work in the underlying software code as a “literary” work as well as a distinct copyright in the artwork, animations, imagery, and sound as an “audiovisual” work. In fact, since a game contains and combines multiple protectable art forms (i.e., music and video) integrated and working with a computer program code that manages some or all of the audiovisual elements of the game; each component of the game is potentially protectable through copyright law.

As a result, a game developer or publisher can obtain copyright protection in America and other countries in their actual finished game. A copyright might also apply to any “video” or “visual” elements utilized in the game, including any photographic images, specific in-game character design, any digitally captured moving images and animations, written text, the specific gameplay storylines, the “imagined” environments as well as geographic locations created within the game, the actual game “box” or cartridge design, in addition to the actual computer code. This might include copyright protection in both the game’s source code as well as in its object code. Furthermore, protection might be appropriate for any original music and other audio elements incorporated into the game, such as any character voices and gameplay sound effects. (Justin M. Jacobson, Esq., The Essential Guide to the Business & Law of Esports & Professional Video Gaming, 58 (CRC Press 2021).

While there may be other protectible assets owned by game developers and publishers, the above is intended to highlight a few common ones used by many of the industry’s top video game creation and publishing companies. Overall, as gaming companies continue to develop original intellectual property and expand their companies, consoles, and game titles globally; the need to properly protect these assets become even more crucial to a company’s commercial success and long-term viability and profitability.

This article is not intended as legal advice, as an attorney specializing in the field should be consulted.

© 2022 Justin Jacobson Law, P.C.